Everything Wrong with PTAB

Everything Wrong with PTAB

The America Invents Act introduced a new proceeding before the Patent Office: inter partes review. Known within the industry as the “patent death squad,” the Patent Trial and Appeal Board (“PTAB”), through the inter partes review process, has invalidated at least one claim in nearly 90% of patents it has reviewed.1

As envisioned by Senators Leahy, Hatch, and Grassley in 2011, inter partes review by the PTAB was to be a meaningful alternative to litigation that would include a threshold for instituting a proceeding in which the challenger must show a “reasonable likelihood” that it would prevail in invalidating a claim of the patent.2 The inter partes review process would include procedural safeguards to prevent a challenger from using inter partes review to harass patent owners and a “reasonably could have raised” estoppel standard, preventing a challenger from raising in court only an argument that reasonably could have been raised during an inter partes review that the challenger instituted.3

However, the current inter partes review proceedings the patent world has gotten from the PTAB are a very different story. Currently, there is a fundamental lack of due process at the PTAB, the decisions are arbitrary and capricious, the PTAB refuses to consider timely submitted evidence, the tribunal has misapplied the law of obviousness, and have ignored the law and created their own tests.4 The PTAB also refuses to allow amendments to be made to claims or to write final written decisions on challenged claims, the latter of which is the subject of SAS Institute v. Matal, a Supreme Court case argued in November 2017.5

Patent owners have employed a variety of tactics to ensure continued validity of their patents. Some have taken to directly challenging the constitutionality of the inter partes review proceeding. In November 2017, the Supreme Court heard oral arguments for Oil States v. Greene’s Energy to decide this very issue. Other patent owners have employed more esoteric strategies. Pharmaceutical company Allergan has sold some of its patents to the Mohawk Tribe and bought licenses to these patents in an attempt to use the tribe’s sovereign immunity to shield the patents’ claims from invalidation by the PTAB. Others have called for a complete disbanding of the PTAB, arguing that the PTAB “has destroyed the U.S. patent system and the value of U.S. patents” and that “the only solution for the very serious transgressions of the [PTAB] is to disband this runaway tribunal.”6

Hopefully, upcoming Supreme Court decisions, coupled permanent leadership at the Patent Office through the confirmation of Director-designee Andrei Iancu, will better delineate the PTAB’s boundaries and refocus the tribunal from being the “patent death squad” whose job is to invalidate patents at any cost to the meaningful alternative to litigation it was envisioned to be.

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Douglas Crockatt

Doug Crockatt is a second-year J.D. candidate at Fordham University School of Law, and a staff member of the Fordham Intellectual Property, Media & Entertainment Law Journal. As a registered patent agent, he has drafted and prosecuted dozens of patent applications before the USPTO.

The Fordham Intellectual Property, Media & Entertainment Law Journal is one of the leading scholarly law journals dedicated to the publication in all areas of intellectual property law.